Ex Parte Wen et al

Patent Trials and Appeals Board

Feb 11, 2019

13901300 - (D) (P.T.A.B. Feb. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/901,300 05/23/2013
23413 7590 02/13/2019
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Liang Wen
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
11PLAS0149-US-NP[3] 5783
EXAMINER
OYER, ANDREW J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
02/13/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIANG WEN, WEI SHAN, MINGFENG LI, and
TONG WU
Appeal2018-003505
Application 13/901,300
Technology Center 1700
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-15, 17, and 41. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In our Decision, we refer to the Specification filed May 23, 2013 ("Spec.");
the Non-Final Office Action dated July 15, 2016 ("Non-Final Act."); the
Appeal Brief filed February 6, 2017 ("App. Br."); the Examiner's Answer
dated May 2, 2017 ("Ans."); and the Reply Brief filed September 21, 2017
("Reply Br.").
2 Appellant, is the Applicant, SABIC Global Technologies B.V., which,
according to the Appeal Brief, is the real party in interest (App. Br. 2).
Appeal2018-003505
Application 13/901,300
The claims are directed to flame retardant polycarbonate
compositions. Claim 1, reproduced below from the Claims Appendix with
key limitations italicized, illustrates the claimed subject matter:
1. A flame retardant composition comprising:
20 to 90 weight percent of a polycarbonate composition;
where the polycarbonate composition comprises a post-
consumer recycle polycarbonate and a polysiloxane-carbonate
copolymer; and
1 to 20 weight percent of a phosphazene compound;
where all weight percents are based on a total weight of the
flame retardant composition,
wherein the flame retardant composition displays an
impact strength of 50 to 80 kilojoules per square meter when
tested as per ASTM D 256 at 23°C, a Vicat softening point of
greater than or equal to 130°C, when measured as per Bl 20,
and a flame out time of less than 5 0 seconds.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Bergeron et al.
("Bergeron")
Eckel et al.
("Eckel")
Siripurapu et al.
("Siripurapu")
Ha et al. ("Ha")
US 3,795,528 Mar. 5, 1974
US 6,747,078 Bl June 8, 2004
US 2006/0205848 Al Sept. 14, 2006
KR 10-2012-00214393 Mar. 9, 2012
3 The Examiner relies on Ha, US 2013/0137801 Al, pub. May 30, 2013, as
the English language equivalent of the reference. Appellant stated no
objection. In our Decision, citations to Ha are to the published US
application.
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Appeal2018-003505
Application 13/901,300
REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a): (1) claims 1-6, 13-15, 17, and 41 over Ha; (2) claims 1, 2, and 6
over Siripurapu in view of Ha; (3) claims 7-9, 11, and 12 over Ha in view of
Eckel; and (4) claim 10 over Ha in view of Bergeron. Non-Final Act. 4--13.
OPINION
Rejection of claims 1-6, 13-15, 17, and 41 as obvious over Ha
The Examiner rejects claims 1---6, 13-15, 17, and 41 as unpatentable
under 35 U.S.C. § 103(a) over Ha. Non-Final Act. 4.
Appellant argues the claims as a group. App. Br. 7-8. We select
claim 1 as representative of the group. Claims 2-6, 13-15, 17, and 41 will
stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Ha teaches ranges of 10-89 wt% for
polycarbonate resin and polycarbonate-polysiloxane copolymer, a range of
1-70 wt% of a modified (meth)acrylic copolymer, and about 1-50 parts by
weight of a phosphorous-based flame retardant. Non-Final Act. 4. The
Examiner finds that Ha does not teach a specific embodiment using
phosphazene, but concludes that at the time of the invention, it would have
been obvious to one of ordinary skill in the art to select phosphazene from
Ha's list of acceptable phosphorous-based flame retardants. Id. ( citing Ha
,r 86). The Examiner finds that Ha does not positively recite all of the
claimed physical properties, but determines that these properties are
achieved by the claimed composition. Id.
Appellant attempts to distinguish the claimed composition from Ha by
showing that Ha's compound would not have the claimed "Vicat softening
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Appeal2018-003505
Application 13/901,300
point of greater than or equal to 130°C, when measured as per B120." See
App. Br. 8. Appellant bases this argument on the examples in Eckel, a
reference the Examiner cites in the § 103 (a) rejection. See id.
Eckel's examples teach compositions containing a polycarbonate and
a phosphazene. Id. Appellant argues that Eckel teaches polycarbonate
present in an amount of 66 wt%, butadiene-styrene acrylonitrile graft
copolymer present in an amount of about 8 wt%, styrene-acrylonitrile
copolymer present in an amount of 9 .4 wt%, phosphazene present in an
amount of 12 wt%, and polytetrafluoroethylene present in an amount of 4.2
wt%. Id.; see also Eckel col. 12, 1. 8---col. 14, 1. 41. Appellant contends that
polystyrene and polyacrylonitrile respectively have softening points of about
105QC and 95°C, and these are analogous to the softening point of the
modified (meth)acrylic copolymer resin of Ha. App. Br. 8. Appellant also
contends that polybutadiene present in the butadiene-styrene acrylonitrile
graft copolymer of Eckel has a softening point that is similar to the softening
point of the polydimethylsiloxane of the polycarbonate-polysiloxane
copolymer of Ha. Id. Appellant argues that the compositions of Ha and
Eckel are identical in terms of the thermal properties of their components,
and, therefore, both compositions would have identical Vicat B softening
temperatures of 107°C, which differs from the claimed value. Id.
As the Examiner correctly points out, the compositions disclosed in
Ha and in Eckel are not analogous to each other. Ans. 13. The composition
of Ha contains polycarbonate, a polycarbonate-polysiloxane copolymer, a
modified (meth)acrylic copolymer resin and a flame retardant that includes
two components (polycarbonate-polysiloxane copolymer and modified
(meth)acrylic copolymer resin) not present in Eckel. Id. Further, Eckel
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Appeal2018-003505
Application 13/901,300
contains additional components butadiene-styrene acrylonitrile graft
copolymer, styrene-acrylonitrile copolymer, and polytetrafluoroethylene. Id.
On these bases, the compositions are not the same.
Moreover, as the Examiner explains, Appellant's argument that
Eckel' s polystyrene and polyacrylonitrile have softening points that are
comparable to the softening point of Ha's modified (meth)acrylic copolymer
fails to take into account the differences in required amounts of the
components. Id. at 14. Ha's modified (meth)acrylic copolymer is only
present as 1 % by weight of the composition, whereas the additional
polymers of Eckel comprise 21. 6% of the composition. Id. In addition,
Eckel' s composition does not comprise a polycarbonate-polysiloxane
copolymer as does Ha's (and the composition of claim 1 ). Id. This is
further evidence that the compositions disclosed in Ha and in Eckel are not
identical, and would not have identical physical properties.
Appellant fails to persuade us that the Examiner reversibly erred in
determining that the composition of claim 1 would have been obvious over
Ha. "For chemical compounds, the structure of the compound and its
properties are inseparable considerations in the obviousness determination."
Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1086 (Fed. Cir. 2008); see
also In re Papesch, 315 F.2d 381,391 (CCPA 1963) ("From the standpoint
of patent law, a compound and all of its properties are inseparable; they are
one and the same thing."). A reference that renders obvious a claimed
compound also renders obvious the properties of the claimed compound.
The Examiner makes a prima facie showing of obviousness of claim 1
over Ha. Appellant fails to overcome the obviousness rejection. We sustain
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Application 13/901,300
the rejection of claim 1, and, for the same reasons, the rejection of claims 2-
6, 13-15, 17, and 41 over Ha.
Rejection of claims 1, 2, and 6 as obvious over Siripurapu in view of
Ha
The Examiner determines that claims 1, 2, and 6 are obvious over
Siripurapu in view of Ha. Non-Final Act. 7-8. The Examiner finds that
Siripurapu teaches a composition with the most of the same components as
in claim 1 in overlapping ranges. Id. at 7. The Examiner finds that
Siripurapu teaches a phosphorous-containing flame retardant, but not
specifically phosphazene. Id. The Examiner finds that Ha teaches
phosphazene as a flame retardant, and that one of ordinary skill in the art at
the time of the invention would have selected phosphazene because Ha
teaches that it is a phosphorous-containing flame retardant. Id. at 7-8.
Appellant did not address the rejection in the Appeal Brief. See
generally App. Br. 7-9.
Appellant's Reply Brief contains new arguments (i.e., that the
Examiner mischaracterizes the disclosures of Siripurapu and Ha, and relies
on impermissible hindsight (Reply Br. 3--4)) which could have been but
were not presented in the Appeal Brief. Under regulations governing
appeals to the Board, a new argument not timely presented in the Appeal
Brief will not be considered when filed in a Reply Brief, absent a showing of
good cause explaining why the argument could not have been presented in
the Appeal Brief. See 37 C.F.R. § 4I.41(b)(2); see also Optivus Tech., Inc.
v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument
raised for the first time in the Reply Brief is considered waived); Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply
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Application 13/901,300
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner's rejections, but were
not."); 37 C.F.R. § 41.37). Because the record contains no such showing,
we will not consider the new argument in the Reply Brief.
We sustain the rejection of claims 1, 2, and 6 as obvious over
Siripurapu in view of Ha.
Rejection of claims 7-9, 11, and 12 as unpatentable over Ha in view
of Eckel and of claim 10 as unpatentable over Ha in view of Bergeron
The Examiner determines that claims 7-9, 11, and 12 are obvious
over Ha in view of Eckel. Non-Final Act. 8-12. The Examiner concludes
that claim 10 is obvious over Ha in view of Bergeron. Id. at 12-13.
Appellant argues that these claims are patentable for the same reasons
as provided with respect to claim 1 "at least because the claimed invention
has demonstrated unexpected results." App. Br. 8-9.
As discussed, supra, Appellant does not demonstrate that the claimed
compositions produce physical properties different from those of
compositions disclosed in Ha. We, therefore, sustain the rejections of claims
7-9, 11, and 12 over Ha in view of Eckel, and of claim 10 over Ha in view
of Bergeron.
DECISION
The rejections of claims 1-15, 17, and 41 as obvious over prior art are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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